ClaimSolution Incorporated v. TheBest Claims Solutions Incorporated

1 WO 2 3 4 5 6 IN THE UNITED STATES DISTRICT COURT 7 FOR THE DISTRICT OF ARIZONA 8 9 ClaimSolution Incorporated, No. CV-23-02379-PHX-MTL 10 Plaintiff, ORDER 11 v. 12 TheBest Claims Solutions Incorporated, et al., 13 Defendants. 14 15 This is a trademark infringement case between two competitors in the 16 attention-grabbing field of insurance claims processing and administration. Plaintiff, 17 ClaimSolution Inc. and owner of the registered trademark “CLAIMSOLUTION,” argues 18 Defendant TheBest Claims Solutions Inc. improperly appropriated its mark, spurring the 19 instant dispute. 20 Before the Court is Plaintiff’s Motion for Partial Summary Judgment (Doc. 48) and 21 Defendant’s Motion for Summary Judgment (Doc. 53). The Court held oral argument on 22 August 12, 2025 (Doc. 66), and now rules. 23 I. BACKGROUND 24 A. Factual Background 25 Since 1995, Plaintiff ClaimSolution Inc. has been in the business of insurance 26 claims processing and administration. (Doc. 48-3 at 83.) Plaintiff offers services such as 27 independent appraisals for auto accidents or catastrophic events. (Id.; Doc. 57-1 at 12.) It 28 markets these services to various insurance companies including fleet and self-insured 1 companies. (Doc. 48-3 at 83.) 2 Plaintiff owns the word mark “CLAIMSOLUTION,” Registration No. 3,324,297, 3 which was registered October 30, 2007. (Doc. 48-2 at 2.) Plaintiff’s Registration Certificate 4 provides that its mark is used in “insurance claims processing and insurance claims 5 administration services other than the processing of insurance claims of damages or broken 6 vehicular wind shields and windows.” (Id.) Plaintiff also owns a design trademark 7 incorporating the “CLAIMSOLUTION” word mark, Registration No. 3,119,834, which 8 was registered July 25, 2006. (Id. at 4.) The design mark is similarly used in connection 9 with “insurance claims processing and insurance claims administration services.” (Id.) 10 Additionally, Plaintiff owns and operates the domain www.claimsolution.com to market 11 its services to the public. (Doc. 48-3 at 84.) On the homepage of the website, Plaintiff’s 12 slogan reads, “The Solution To All Your Claims Needs.” (Doc. 48-2 at 7.) 13 Like Plaintiff, Defendant TheBest Claims Solutions Inc. is also in the business of 14 insurance claims processing and administration. (Doc. 1 ¶¶ 15-16; Doc. 9 ¶¶ 15-16.) 15 Defendant originally conducted business under the name “TheBestIRS”—with “IRS” 16 meaning “Insurance Recruiting Specialists.” (Doc. 53-2 at 7; Doc. 59-1 at 26.)1 Today, 17 Defendant provides recruiting and staffing services in addition to a variety of claims 18 processing services across various areas. (Doc. 48-3 at 27.) Defendant markets its services 19 to “insurance carriers, who operate within the automative, property and contents insurance 20 industry,” and “transacts business within its warranty division with customers based in 21 manufacturing.” (Id. at 29.) 22 In or around November 2019, Defendant initiated a rebranding effort from 23 “TheBestIRS” to “TheBest Claims Solutions,” in part because Defendant added claims 24 processing services alongside its existing recruiting and staffing services. (Doc. 48-2 at 25 44-46, -3 at 48; Doc. 57-2 at 48.) As part of its rebranding, Defendant changed its domain 26 name from www.thebestirs.com to www.thebestclaims.com in 2020. (Doc. 48-2 at 43; 27 1 Defendant owns two trademark registrations under “TheBestIRS,” used in connection with “employment agency services; employment staffing in the field of insurance; 28 professional staffing and recruiting services.” (Doc. 53-2 at 8-9; Doc. 60 at 26.) Defendant’s marks are not at issue in this action. 1 Doc. 53-2 at 10.) Defendant also retained counsel to conduct a trademark viability search 2 near the close of 2019. (Doc. 48-3 at 27.) Following the search, Defendant received a 3 document listing all registered trademarks similar to “TheBest Claims Solutions”—and 4 Plaintiff’s mark was amongst the results. (Id. at 66-67.) Defendant publicly announced its 5 rebrand “[i]ntroducing the new look, new name, and future of TheBestIRS” in an online 6 press release published January 14, 2021. (Id. at 48.) 7 Plaintiff was made aware of Defendant’s company in or around July 2021, and on 8 August 6, 2021, Plaintiff sent Defendant a cease-and-desist letter, notifying Defendant of 9 its infringement on its marks. (Doc. 48-2 at 18-19, 35.) Defendant responded, noting the 10 alleged weaknesses of Plaintiff’s claim and arguing its use is protected under the classic 11 fair use defense. (Doc. 53-2 at 81-83.) This lawsuit followed. 12 B. Procedural Background 13 Plaintiff filed its Complaint on November 13, 2023, alleging trademark 14 infringement under the Lanham Act, 15 U.S.C. § 1114(1)(A) (Count I), common law 15 trademark infringement and unfair competition under Arizona law and the Lanham Act 16 (Count II), and seeking a petition for cancellation of Defendant’s mark under the Lanham 17 Act (Count III).2 (Doc. 1.) 18 Plaintiff now moves for partial summary judgment as to liability on its claims for 19 trademark infringement under the Lanham Act (Count I) and common law trademark 20 infringement and unfair competition (Count II). (Doc. 48.) Defendant cross-moves for 21 summary judgment on Counts I-III of Plaintiff’s Complaint and requests an award of 22 attorneys’ fees. (Doc. 53.) Both motions are fully briefed. (Docs. 54, 57, 58, 60.) 23 II. LEGAL STANDARD 24 Summary judgment is appropriate when the evidence, viewed in the light most 25 favorable to the non-moving party, demonstrates “that there is no genuine dispute as to any 26 2 Defendant voluntarily surrendered the design mark Plaintiff seeks to cancel in Count III. 27 (Doc. 53-2 at 71-75.) At oral argument, Plaintiff proposed dismissing Count III along with its profit disgorgement theory of damages. The parties agreed to file a joint status report 28 regarding dismissal of these items on or before September 17, 2025. Therefore, the Court will not address Defendant’s arguments as to Count III or damages. 1 material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 2 56(a). A genuine issue of material fact exists when “the evidence is such that a reasonable 3 jury could return a verdict for the nonmoving party,” and material facts are those “that 4 might affect the outcome of the suit under the governing law.” Anderson v. Liberty Lobby, 5 Inc., 477 U.S. 242, 248 (1986). At the summary judgment stage, “[t]he evidence of the 6 non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” 7 Id. at 255 (citation omitted); see also Jesinger v. Nev. Fed. Credit Union, 24 F.3d 1127, 8 1131 (9th Cir. 1994) (holding that the court determines whether there is a genuine issue for 9 trial but does not weigh the evidence or determine the truth of matters asserted). 10 When the “parties submit cross-motions for summary judgment, each motion must 11 be considered on its own merits.” Fair Hous. Council of Riverside Cnty. v. Riverside Two, 12 249 F.3d 1132, 1136 (9th Cir. 2001) (citation modified). The summary judgment standard 13 operates differently depending on whether the moving or non-moving party has the burden 14 of proof. See Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986). When the movant 15 bears the burden of proof on a claim at trial, the movant “must establish beyond controversy 16 every essential element” of the claim based on the undisputed material facts to be entitled 17 to summary judgment. S. Cal. Gas Co. v. City of Santa Ana, 336 F.3d 885, 888 (9th Cir. 18 2003) (citation modified). If the movant fails to make this showing, summary judgment is 19 inappropriate, even if the non-moving party has not introduced contradictory evidence in 20 response. When, on the other hand, the non-movant bears the burden of proof on a claim 21 at trial, the movant may prevail either by citing evidence negating an essential element of 22 the non-movant’s claim or by showing that the non-movant’s proffered evidence is 23 insufficient to establish an essential element of the non-movant’s claim. See Celotex, 477 24 U.S. at 322-23; Nissan Fire & Marine Ins. v. Fritz Cos., 210 F.3d 1099, 1102-03 (9th Cir. 25 2000). 26 III. DISCUSSION 27 Plaintiff and Defendant each seek summary judgment in their favor. Given the 28 significant overlap, the Court combines the parties’ arguments by issue. 1 A. Evidentiary Objections 2 The Court first addresses the parties’ evidentiary objections. Evidence submitted in 3 a motion for summary judgment must satisfy the requirements of Federal Rule of Civil 4 Procedure 56. Fraser v. Goodale, 342 F.3d 1032, 1036-37 (9th Cir. 2003). The Court will 5 rule only on the objections with respect to the evidence upon which the Court relies in 6 adjudicating the summary judgment motions.3 7 1. Authentication 8 Starting with authentication: “[a] trial court can only consider admissible evidence 9 in ruling on a motion for summary judgment.” Orr v. Bank of Am., NT & SA, 285 F.3d 764, 10 773 (9th Cir. 2002). This means the Court generally cannot consider unauthenticated 11 evidence because “authentication is a condition precedent to admissibility.” Id. 12 Plaintiff argues Exhibits 2 and 10 to Defendant’s motion cannot be considered 13 because they are not properly authenticated. (Doc. 57 at 10-11.) Plaintiff’s authentication 14 arguments, however, are moot because the Court permitted Defendant to supplement its 15 motion with authenticating declarations. (Doc. 63; see also Doc. 59-1 (authenticating 16 Exhibits 1-4, most emails in Exhibit 5, and Exhibits 8, 10-19).) Accordingly, the Court 17 overrules Plaintiff’s objection as to this evidence and will consider it in assessing the 18 pending motions. 19 2. Hearsay 20 The Court now turns to Defendant’s objection that certain evidence submitted by 21 Plaintiff is inadmissible hearsay and therefore, cannot be considered. (Doc. 60 at 6.) 22 Hearsay is an out-of-court statement offered in evidence “to prove the truth of the matter 23 asserted in the statement.” Fed. R. Evid. 801(c). Hearsay is generally inadmissible unless 24 it is defined as non-hearsay under Rule 801(d) or falls within a hearsay exception. Id.; Fed. 25 R. Evid. 802. 26 Defendant objects to Plaintiff’s Exhibit 23 on hearsay grounds.4 (Doc. 54 at 6; Doc. 27 3 The Court’s analysis does not rely on defense exhibits 1, 5, 12, 16, 17, 18, 19, and therefore, the Court declines to address Plaintiff’s objections relating to that evidence at 28 this time. 4 Although lacking in clarity, Defendant also seems to object to Plaintiff’s Exhibit 22, 1 60 at 6.) Exhibit 23 consists of a declaration from Plaintiff’s chief marketing officer, Dale 2 Mason, who states that at a trade show conference, he spoke with a client representative 3 who referred to Plaintiff’s and Defendant’s employees as “the two ClaimSolution guys.” 4 (Doc. 48-3 at 92; see also id. at 87.) Relying on Lahoti v. VeriCheck, Inc., 636 F.3d 501 5 (9th Cir. 2011), Plaintiff argues these statements are not hearsay because they are not 6 offered to prove the truth of the matter asserted, or they are admissible under the state of 7 mind exception. (Doc. 48 at 14 n.1.) 8 In Lahoti, two witnesses testified for the defendant about “a substantial number of 9 telephone calls from confused customers who could not find information about Vericheck 10 [the defendant’s company] on www.vericheck.com [the plaintiff’s domain].” 636 F.3d at 11 509. On appeal, the plaintiff argued this testimony should not have been considered 12 because it contained inadmissible hearsay. Id. The Ninth Circuit disagreed, recognizing 13 that the customers’ statements of confusion were hearsay but admissible under the state of 14 mind exception. Id. (citing 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair 15 Competition § 23:15 (4th ed. Supp. 2010) and “noting that the ‘majority of courts’ have so 16 found and opining that such testimony ‘is not hearsay’”). 17 In light of Lahoti, the representative’s statement to “the two ClaimSolution guys” is 18 not hearsay if offered solely to show the speaker’s state of mind—namely, that the speaker 19 was confused about the association of the individuals referenced. But the evidentiary value 20 of the statement for that purpose is somewhat limited, as the phrase “the two ClaimSolution 21 guys” does not by itself convey the speaker’s confusion. Rather, it is the surrounding 22 context which informs any inference of confusion. And therefore, the statement 23 presupposes the very thing it seeks to prove: confusion. At this time, and given the Ninth 24 Circuit’s guidance in Lahoti, the Court will overrule Defendant’s hearsay objection and 25 consider the evidence in assessing the likelihood of confusion. 26 27 where Plaintiff’s CEO declared that at a trade show conference, she spoke with a client who “expressed his confusion thinking that [Defendant’s employee] Todd had worked for 28 ClaimSolution.” (Doc. 48-3 at 87.) Because the arguments substantively overlap, the Court will overrule any hearsay objection as to Exhibit 22 for the reasons provided herein. 1 B. Count I: Trademark Infringement 2 The Court now turns to the substance of the parties’ motions. Both parties 3 cross-move for summary judgment on Count I, trademark infringement. (Doc. 48 at 9-16; 4 Doc. 53 at 7-15.) 5 Under the Lanham Act, a defendant is liable for trademark infringement if he uses 6 a “reproduction, counterfeit, copy, or colorable imitation of a registered mark” in 7 commerce without the consent of the registrant, and “such use is likely to cause confusion, 8 or to cause mistake, or to deceive.” 15 U.S.C. § 1114(a). To prevail on a trademark 9 infringement claim, a plaintiff must demonstrate “(1) that it has a protectible ownership 10 interest in the mark; and (2) that the defendant’s use of the mark is likely to cause consumer 11 confusion.” Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 12 1144 (9th Cir. 2011) (citation modified). The parties only contest the latter requirement. 13 “The core element of trademark infringement is the likelihood of confusion.” 14 Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1053 (9th Cir. 1999) 15 (citation modified). “The test for likelihood of confusion is whether a ‘reasonably prudent 16 consumer’ in the marketplace is likely to be confused as to the origin of the good or service 17 bearing one of the marks.” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th 18 Cir. 2002) (citation modified). 19 The Ninth Circuit uses the eight Sleekcraft factors to guide the likelihood 20 of confusion analysis, assessing: (1) the similarity of the marks; (2) the proximity or 21 relatedness of the companies’ goods or services; (3) the strength of the mark; (4) evidence 22 of actual confusion; (5) the marketing channels used; (6) the type of goods and the degree 23 of care likely to be exercised by the purchaser; (7) the defendant’s intent in selecting its 24 mark; and (8) the likelihood of expansion into other markets. AMF Inc. v. Sleekcraft Boats, 25 599 F.2d 341, 348-49 (9th Cir. 1979), abrogated on other grounds by, Mattel, Inc. v. 26 Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003). To defeat summary judgment, a 27 plaintiff “must show sufficient evidence to permit a rational trier of fact to find that 28 confusion is ‘probable,’ not merely ‘possible.’” M2 Software, Inc., v. Madacy Ent., 421 1 F.3d 1073, 1085 (9th Cir. 2005) (citation omitted); see also Rearden LLC v. Rearden Com., 2 Inc., 683 F.3d 1190, 1209 (9th Cir. 2012) (“[A] plaintiff must show more than simply a 3 possibility of such confusion.”). 4 1. The Relevant Consumer Market 5 Before turning to the Sleekcraft factors, the Court “must define the relevant 6 consumer market because ‘a court conducting a trademark analysis should focus its 7 attention on the relevant consuming public.’” Ironhawk Techs., Inc. v. Dropbox, Inc., 2 8 F.4th 1150, 1160-61 (9th Cir. 2021) (quoting Rearden, 683 F.3d at 1214). 9 Plaintiff argues both its and Defendant’s services are marketed to two groups: 10 (1) independent claims adjusters who work as independent contractors for the parties; and 11 (2) companies seeking to hire outside vendors for claims processing. (Doc. 48 at 15; Doc. 12 58 at 10; cf. Doc. 48-3 at 83 (“ClaimSolution markets its services to insurance companies 13 and fleet and self-insured companies.”).) Defendant represents that its consumer base 14 consists of “insurance carriers, who operate within the automotive, property and contents 15 insurance industry.” (Doc. 48-3 at 29.) Defendant argues “independent appraisers are not 16 the end consumers of either party’s services.” (Doc. 60 at 5.) 17 The Court agrees with Defendant. The trademark infringement analysis centers on 18 whether a “reasonably prudent consumer” in the marketplace is likely to be confused. 19 Entrepreneur Media, 279 F.3d at 1140. This is because “trademark infringement protects 20 only against mistaken purchasing decisions and not against confusion generally.” Bosley 21 Med. Inst., Inc. v. Kremer, 403 F.3d 672, 677 (9th Cir. 2005) (citation modified). At oral 22 argument, when asked whether independent insurance adjusters can be fairly categorized 23 as consumers, Plaintiff’s counsel acknowledged that they are not customers but nonetheless 24 essential figures in Plaintiff’s business model. Because there is no evidence independent 25 insurance adjusters are consumers of either party’s services, the Court concludes that the 26 relevant consumer market is the companies, including insurance companies, who hire 27 Plaintiff and Defendant to handle insurance claims processing and administration. 28 That does not mean confusion on the part of independent claims adjusters is per se 1 irrelevant. Indeed, the Ninth Circuit has recognized that non-consumer confusion may be 2 relevant in “three specific and overlapping circumstances—namely where there is 3 confusion on the part of: (1) potential consumers; (2) non-consumers whose confusion 4 could create an inference that consumers are likely to be confused; and (3) non-consumers 5 whose confusion could influence consumers.” Rearden, 683 F.3d at 1214. Critically, 6 however, the Ninth Circuit limited its holding to these three scenarios, expressly declining 7 to decide whether confusion on the part of other non-consumers “[such] as vendors and 8 suppliers, potential employees, and investors should be considered merely because such 9 confusion could affect the trademark holder’s business, goodwill or reputation.” Id. at 1214 10 n.9. Therefore, evidence of confusion on part of the independent claims adjustors and other 11 non-consumers is relevant only insofar as it bears a relationship to confusion in the relevant 12 consumer market, which here, consists of “companies, including insurance companies.” 13 2. The Sleekcraft Factors 14 The Court now turns to the Sleekcraft factors, which “guide the court in assessing 15 the basic question of likelihood of confusion.” E. & J. Gallo Winery v. Gallo Cattle Co., 16 967 F.2d 1280, 1290 (9th Cir. 1992) (citation modified). “The presence or absence of a 17 particular factor does not necessarily drive the determination of a likelihood of confusion.” 18 Id. Rather, the Court considers whether a likelihood of confusion exists under the totality 19 of the circumstances. Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1125 (9th Cir. 20 2014). 21 i. Similarity of the Marks 22 “The first Sleekcraft factor—the similarity of the marks—has always been 23 considered a critical question in the likelihood-of-confusion analysis.” GoTo.com, Inc. v. 24 Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir. 2000); see also Brookfield Commc’ns, 25 174 F.3d at 1054 (“The similarity of the marks will always be an important factor.”). 26 “Obviously, the greater the similarity between the two marks at issue, the greater the 27 likelihood of confusion.” GoTo.com, 202 F.3d at 1206. Three axioms guide the Court’s 28 analysis on this factor. First, “the court is to view the marks as a whole, as they appear in || the marketplace,” E. & J. Gallo Winery, 967 F.2d at 1291, rather than taking a 2|| “deconstructionist view of the different components of the marks,” Active Network, Inc. v. 3|| Elec. Arts Inc., No. 10-cv-01158, 2010 WL3463378, at *3 (S.D. Cal. Aug. 31, 2010). Second, because similarities may be more than merely visual, the marks must be compared 5|| “in terms of appearance, sound, and meaning.” GoTo.com, 202 F.3d at 1206. Third, || “similarities are weighed more heavily than differences.” Jd. Where services are directly || competitive, the degree required to prove a likelihood of confusion is less than in the case 8 || of dissimilar services. Sleekcraft, 599 F.2d at 350. 9 Plaintiff argues the dominate portion of its marks consist of the words “claim” and “solution,” and Defendant’s name in the marketplace—also incorporating “claims” 11 |} “solutions’—is confusingly similar. (Doc. 48 at 12-13.) Citing to out-of-circuit authority, Plaintiff contends that merely placing a generic, or descriptive superlative, such as 13|| “TheBest” before “claims” “solutions” does little to avoid consumer confusion.° (/d.) In 14]| response, Defendant contends that the dominate portions of its mark—the initials “TB” and 15 || name “TheBest’—distinguish Defendant’s mark from Plaintiff's. (Doc. 53 at 11; Doc. 54 □□ at 9.) According to Defendant, ““TheBest” is dominate because Defendant is referred to as “TheBest” by the general consuming public. (Doc. 53 at 2-3; see also Doc. 48-3 at 48; Doc. 53-2 at 42.) The parties’ marks as they appear in the marketplace are presented below:°® 19 r rym = 0} TheBest — qeTinwoitnow CLAIMS SOLUTIONS 21 22 The Court observes that the marks both use the words “claim” and “solution” and 23 || therefore, convey a common meaning—namely, that both companies offer solutions to || insurance claims processing. The marks are also similar in sound. Although Defendant uses 25|| 5 (Doc. 48 at 12-13 (citing Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 477 (3d Cir. 1994) and S&P Glob. Inc. v. S&P Data LLC, 619 F. Supp. 3d 445, 456 (D. 26|| Del. 2022).) The Court is not bound nor persuaded by these authorities and declines to address them here. © The parties dispute which version of marks should be compared in assessing this factor. (See Doc. 48 at 12; Doc. 54 at 9.) Because the marks must be assessed as they appear in the marketplace, GoTo.com, 202 F.3d at 1206, the Court will compare each company’s logo as presented to the general consuming public. -10- 1 the plural of each word (i.e., “Claims Solutions”) whereas Plaintiff adopts the singular 2 iteration (i.e., “ClaimSolution”), the marks sound similar when spoken aloud. Critically, 3 however, Defendant’s use of “claims solutions” is always accompanied after the dominate 4 portion of its mark, “TheBest,” which militates against the marks’ similarity in both sound 5 and meaning. 6 Visually, the marks are not similar. As one can plainly observe in a side-by-side 7 comparison, the parties use different fonts, words, stylizations, and shades of blue. The 8 dominate portions of Defendant’s mark include a “TB” stylized logo and Defendant’s name 9 “TheBest” in a larger distinct font. Given that “TheBest” visually dominates the design of 10 Defendant’s mark, consumers are likely to have different impressions of each brand when 11 encountered in the marketplace and are therefore, less likely to experience confusion. In re 12 Electrolyte Lab’ys, Inc., 929 F.2d 645, 647 (Fed. Cir. 1990) (“More dominant features will, 13 of course, weigh heavier in the overall impression of a mark.”). Additionally, the words 14 “Claims Solutions,” as used in Defendant’s mark, are two separate words in a much smaller 15 font. In contrast, Plaintiff’s mark combines the terms “claim” and “solution” in a single 16 word—“ClaimSolution”—followed by “INC,” styled in a thin, black serif font. Plaintiff’s 17 mark also incorporates a swoosh design, in a lighter shade of blue compared to Defendant’s 18 mark. These visual differences cut against a likelihood of confusion. 19 As further evidence of similarity, Plaintiff argues Defendant’s slogan, “Claim 20 Solutions, Reimagined” reinforces similarities with Plaintiff’s brand and slogan, 21 “ClaimSolution, the solution to all your claims needs.” (Doc. 48 at 13; see also Doc. 48-2 22 at 7; -3 at 69.) Defendant contends the phrase “Claim Solutions, Reimagined” is not a 23 slogan, but referenced solely in its pitch material to a limited audience and not the consumer 24 public at large. (Doc. 54 at 4.) But testimony from Defendant’s CEO Bradley Dunlap 25 appears to refute that assertion. When asked, “Is Claim Solutions, Reimagined, is that a 26 slogan that is used within the company?” Mr. Dunlap responded, “Yes.” (Doc. 48-2 at 27 106-07.) Later in his deposition, Mr. Dunlap explained that this phrase is used merely to 28 describe Defendant’s services. (Id. at 108, 111.) The Court recognizes that Mr. Dunlap’s 1 testimony could be construed as identifying “Claim Solutions, Reimagined” as a slogan in 2 the colloquial sense—not in the legal sense as a brand identifier. But an evaluation of Mr. 3 Dunlap’s testimony is an issue best reserved for the trier of fact. 4 Given this evidence, a rational trier of fact could find Defendant’s use of “Claims 5 Solutions” in its slogan and marks confusingly similar to Plaintiff’s, even though the marks 6 create different visual impressions. Because this Court must weigh similarities more 7 heavily than differences, the Court concludes that this factor tilts in favor of Plaintiff. 8 ii. Proximity or Relatedness of the Parties’ Services 9 On the next factor, the Court assesses the relatedness of the parties’ services. The 10 more closely related the parties’ services, the more likely consumers will be confused by 11 similar marks. See Brookfield Commc’ns, 174 F.3d at 1055. To determine relatedness, 12 courts consider whether the services (1) are “complementary,” (2) share the “same class” 13 of consumers, and (3) are “similar in use and function.” Network Automation, 683 F.3d at 14 1150 (citation omitted). The ultimate question is whether the services “would be reasonably 15 thought by the buying public to come from the same source if sold under the same mark.” 16 Sleekcraft, 599 F.2d at 348 n.10 (citation modified). 17 Defendant concedes that the services between Plaintiff and Defendant are 18 substantially related. (Doc. 53 at 8; Doc. 54 at 9.) Indeed, testimony from Defendant’s sales 19 executive, Todd Yanak, confirmed there are overlapping services between the companies. 20 (Doc. 48-2 at 57-58.) Accordingly, this Sleekcraft factor favors Plaintiff. 21 iii. Strength the Mark 22 The Court turns to the strength of the mark factor. “The scope of the trademark 23 protection that we give marks depends upon the strength of the mark, with stronger marks 24 receiving greater protection than weak ones.” Entrepreneur Media, 279 F.3d at 1141. A 25 strong mark is one that is likely to be “remembered and associated in the public mind with 26 the mark’s owner.” Brookfield Commc’ns, 174 F.3d at 1058. Courts measure a mark’s 27 strength both conceptually and commercially. See Stone Creek, Inc. v. Omnia Italian 28 Design, Inc., 875 F.3d 426, 432 (9th Cir. 2017) (“The strength of the mark is a key factor 1 with two components: the mark’s recognition in the market (i.e., its commercial strength) 2 and the mark’s inherent distinctiveness (i.e., its conceptual strength).”), abrogated on other 3 grounds by, Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 426 (2020). 4 a. Conceptual Strength 5 The conceptual strength of a mark depends on where it falls on a spectrum ranging 6 from “generic” (conceptually weak) to “arbitrary” (conceptually strong). Moose Creek, Inc. 7 v. Abercrombie & Fitch Co., 331 F. Supp. 2d 1214, 1224 (C.D. Cal.), aff’d, 114 F. App’x 8 921 (9th Cir. 2004). Plaintiff argues its ClaimSolution word mark and design mark are 9 properly classified as “fanciful” and “arbitrary” marks, and therefore, conceptually strong. 10 (Doc. 48 at 10; Doc. 57 at 13.) In response, Defendant argues Plaintiff’s marks are merely 11 descriptive. (Doc. 53 at 8-10; Doc. 54 at 7-9.) 12 Often the conceptually strongest, “[a]rbitrary and fanciful marks have no intrinsic 13 connection to the product with which the mark is used.” Brookfield Commc’ns, 174 F.3d 14 at 1058 n.19.7 “A suggestive mark conveys an impression of a good but requires the 15 exercise of some imagination and perception to reach a conclusion as to the product’s 16 nature.” Id. A mark is descriptive if it “directly describe[s] the quality or features of the 17 product.” Id. Lastly, generic marks “refer generally to the product rather than a particular 18 brand of the product.” Id. Arbitrary, fanciful, and suggestive marks are considered 19 “inherently distinctive” and automatically receive protection because they immediately 20 identify the source of a product or service. Quiksilver, Inc. v. Kymsta Corp., 466 F.3d 749, 21 760 (9th Cir. 2006). Descriptive marks, however, receive protection only if they acquire 22 secondary meaning in the marketplace. Fortune Dynamic, Inc. v. Victoria’s Secret Stores 23 Brand Mgmt., Inc., 618 F.3d 1025, 1033 (9th Cir. 2010). 24 The Court finds that Plaintiff’s marks cannot be classified as arbitrary or fanciful. 25 The word “ClaimSolution” consists of the words “claim” and “solution”—neither of which 26 are made-up nor used in an arbitrary sense. Rather, the mark is intrinsically connected to 27 7 A mark is arbitrary if it uses English words arbitrarily, see, e.g., Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 154 (9th Cir. 1963) (“Black & White” scotch 28 whiskey), whereas fanciful marks consist of made-up words, see, e.g., Clorox Chem. Co. v. Chlorit Mfg. Corp., 25 F. Supp. 702, 705 (E.D.N.Y. 1938) (“Clorox” bleach). 1 Plaintiff’s services: offering “solutions” to insurance “claims” via claims processing and 2 administration. (Doc. 48-3 at 83.) This means Plaintiff’s mark falls somewhere between 3 the suggestive and descriptive categories—a distinction that is often difficult to delineate 4 with any meaningful degree of certainty. See Lahoti v. VeriCheck, Inc., 586 F.3d 1190, 5 1197 (9th Cir. 2009) (“[L]egions of trademark lawyers can stay busy arguing about how 6 marks in the middle, not so plainly descriptive, nor so plainly [suggestive], should be 7 categorized.”). 8 To this end, the Court is guided by the Ninth Circuit’s analysis in Fortune Dynamic, 9 Inc. v. Victoria’s Secret Stores Brand Management Inc., 618 F.3d 1025 (9th Cir. 2010). 10 There, the plaintiff, Fortune Dynamic and owner of the trademark “DELICIOUS” in 11 connection with its footwear, sued the defendant Victoria’s Secret after it sold pink tank 12 tops displaying the word “Delicious.” Id. at 1029. In assessing the conceptual strength of 13 Fortune’s mark, the Ninth Circuit examined the dictionary definition of “delicious” and 14 employed both the imagination and competitor tests using the evidence in the record. Id. at 15 1033-34. Ultimately, the Ninth Circuit determined that a genuine issue of material fact as 16 to whether “DELICIOUS” is suggestive or descriptive precluded summary judgment. Id. 17 at 1034. 18 The Court will follow the same approach here. Beginning with the dictionary 19 definition of “claim solutions”: the noun “claim” is defined as “a demand for something 20 due or believed to be due” such as “an insurance claim.” Claim, Merriam-Webster, 21 https://www.merriam-webster.com/dictionary/claim (last visited Aug. 18, 2025). “Claim” 22 can also mean “a right to something,” “an assertion open to challenge,” or “something that 23 is claimed.” Id. The word “solution” similarly has different meanings, including “an action 24 or process of solving a problem” or “an answer to a problem.” Solution, Merriam-Webster, 25 https://www.merriam-webster.com/dictionary/solution (last visited Aug. 18, 2025). 26 Together, “claim solutions” connotes the following meaning: the process of solving a 27 problem related to a demand (such as an insurance claim). 28 Like the Ninth Circuit in Fortune Dynamic, the Court determines that a genuine 1 issue of material fact exists as to whether Plaintiff’s mark is suggestive or descriptive. 2 Some evidence suggests the mark is merely descriptive. For example, Defendant submitted 3 evidence that at least twenty-five third-party companies employ the terms “claim” 4 “solutions” in connection with their brand. (See Doc. 53-2 at 46-70.) A rational trier of fact 5 could find that “claims solutions” is a phrase commonly used to describe a company’s 6 services in the marketplace. On the other hand, a rational trier of fact could also find that 7 one needs to have some imagination—albeit not a particularly creative one—to connect 8 “claim” “solutions” with Plaintiff’s insurance claims processing services. See Lahoti, 636 9 F.3d at 507 (affirmed finding that the mark VERICHECK for check verification services 10 was suggestive, not descriptive). 11 The distinction between suggestive and descriptive has legal significance because 12 descriptive marks require proof of acquired distinctiveness (or secondary meaning) to be 13 protectable, whereas suggestive marks do not. Fortune Dynamic, 618 F.3d at 1033. And if 14 a mark is suggestive, a jury is more likely to reasonably conclude the strength of the mark 15 factor weighs in favor of confusion. Id. at 1034. 16 While this issue is best left to a trier of fact, the Court observes that even if Plaintiff’s 17 mark is deemed suggestive, it is presumed conceptually weak.8 Brookfield Commc’ns, 174 18 F.3d at 1058 (explaining that suggestive marks “are presumptively weak”). 19 b. Commercial Strength 20 A conceptually weak mark, such as Plaintiff’s, may have “its overall 21 strength . . . bolstered by its commercial success.” M2 Software, 421 F.3d at 1081. To 22 assess a mark’s commercial strength, courts look to whether the mark has attained “actual 23 marketplace recognition.” Fortune Dynamic, 618 F.3d at 1032-34 (citation omitted). 24 Actual marketplace recognition may be demonstrated by commercial success (i.e., sales), 25 8 Plaintiff contends the incontestable status of its marks render it strong. (Doc. 48 at 10.) Critically, however, “the incontestable status of [a] mark does not require a finding that the 26 mark is strong.” Entrepreneur Media, 279 F.3d at 1142 n.3; see also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:155 (5th ed. 2025) 27 (“The status of incontestability relates solely to the validity of the registered mark. The . . . commercial and marketplace strength of the mark relates solely to the separate 28 issue of infringement of the mark.”). Therefore, the incontestable status of Plaintiff’s mark does not, by itself, establish the mark’s strength. 1 advertising expenditures, length of exclusive use, and public recognition. M2 Software, 2 421 F.3d at 1081. 3 Plaintiff argues its marks are commercially strong because it has exclusively used 4 them in commerce as early as 1999 and extensively advertised. (Doc. 57 at 13.) Plaintiff 5 further contends it has “invested in these marks such that they are among [] some of the 6 most recognizable marks in the insurance industry.” (Doc. 48 at 10.) In support, Plaintiff 7 represents that between 2019 and 2023, it spent between $55,097.48 and $156,903.76 each 8 year in connection with advertising and promoting its services with its trademarks.9 (Doc. 9 48-3 at 85.) 10 Plaintiff, however, has not presented any evidence of its exclusive use, sales 11 volume, or public recognition, relating to its marks.10 And even when there is evidence 12 relating to advertising expenditures and sales, “the absence of any indication that 13 consumers recognize the mark undercuts that strength to a significant degree.” Great Am. 14 Duck Races Inc. v. Kangaroo Mfg. Inc., 398 F. Supp. 3d 494, 505 (D. Ariz. 2019); see also 15 Brookfield Commc’ns, 174 F.3d at 1058-59 (holding that “the district court did not clearly 16 err in classifying ‘MovieBuff’ as weak” where the plaintiff claiming trademark 17 infringement presented use of the mark for over five years, expenditures of $100,000 in 18 advertising, and did “not come forth with substantial evidence establishing the widespread 19 recognition of its mark”); JL Beverage Co., LLC v. Beam, Inc., 318 F. Supp. 3d 1188, 1205 20 (D. Nev. 2018) (finding “JL Beverage’s evidence”—consisting of less than $500,000 in 21 advertising expenditures and only $2.6 million in sales—did “not show extensive sales or 22 advertising, especially for a national market”), aff’d sub nom., JL Beverage Co., LLC v. 23 Jim Beam Brands Co., 815 F. App’x 110 (9th Cir. 2020). 24 Additionally, Defendant presented evidence that at least twenty-five third-party 25 companies use the terms “claim” “solutions” in connection with their brand, further 26 9 Plaintiff’s advertising expenditures consist of $81,639.67 (2019); $55,097.48 (2020); $102,813.68 (2021); $147,962.15 (2022); and $156,903.76 (2023). (Id.) 27 10 In fact, Plaintiff’s word mark was initially refused registration due to a likelihood of confusion with registered mark, “Alliance Claims Solutions,”—suggesting Plaintiff’s use 28 of the mark “ClaimSolution” has not been exclusive since approximately 1999, as Plaintiff avers. (Doc. 54-1 at 3-6.) 1 decreasing the marks’ strength as a brand identifier. (See Doc. 53-2 at 46-70 (including 2 “Claim Solutions USA,” “Ryze Claim Solutions,” “One Claim Solution,” “NICFI Claims 3 Solutions,” amongst others).) As observed by the Ninth Circuit, “[w]hen similar marks 4 permeate the marketplace, the strength of the mark decreases.” One Indus., LLC v. Jim 5 O’Neal Distrib., 578 F.3d 1154, 1164 (9th Cir. 2009); Entrepreneur Media, 279 F.3d at 6 1144 (“[T]hat the marketplace is replete with products using a particular trademarked word 7 indicates not only the difficulty in avoiding its use but also, and directly, the likelihood that 8 consumers will not be confused by its use.”); Great W. Air, LLC v. Cirrus Design Corp., 9 649 F. Supp. 3d 965, 979 (D. Nev. 2023) (explaining “evidence that three other companies 10 in the aviation market use the name Cirrus . . . weakens the Cirrus mark’s commercial 11 strength”), aff’d, No. 23-15157, 2024 WL 5134351 (9th Cir. Dec. 17, 2024).11 12 Given that the term “claim solutions” permeates the marketplace, and because 13 Plaintiff did not present sufficient evidence of the marks’ commercial strength, the Court 14 finds the commercial strength factor favors Defendant. 15 iv. Evidence of Actual Confusion 16 The next Sleekcraft factor assesses evidence of actual confusion. Evidence of actual 17 confusion is evidence “that use of the two marks has already led to confusion” among 18 consumers. Sleekcraft, 599 F.2d at 352. Evidence of past confusion is, obviously, 19 “persuasive proof that future confusion is likely.” Id. The absence of such evidence, 20 however, is not necessarily fatal. Acad. of Motion Picture Arts & Scis. v. Creative House 21 Promotions, Inc., 944 F.2d 1446, 1456 (9th Cir. 1991); see also Brookfield Commc’ns, 174 22 F.3d at 1050 (“[A]ctual confusion is hard to prove; difficulties in gathering evidence of 23 actual confusion make its absence generally unnoteworthy.”). At the same time, a lack of 24 consumer confusion evidence, especially when the marks have coexisted for a significant 25 11 Plaintiff contends Defendant’s dilution argument is unpersuasive because many of the 26 cited companies using the term “claim solutions” “are not in the same industry as Plaintiff.” (Doc. 57 at 14.) The Court disagrees. Evidence that a term is used ubiquitously, even across 27 various industries, may be considered in assessing the mark’s strength. See Collins v. U.S. Dep’t of Veterans Affs., 497 F. Supp. 3d 885, 895 (S.D. Cal. 2020) (evidence that “the term 28 360 is used ubiquitously” across “thousands of other registered and asserted trademarks” suggests the marks are conceptually weak). 1 period of time, can serve as evidence that future confusion is unlikely. See Cohn v. 2 Petsmart, Inc., 281 F.3d 837, 842-43 (9th Cir. 2002); see also Restatement (Third) of 3 Unfair Competition § 23 cmt. d (A.L.I. 1995) (“[W]hen the parties have made significant 4 use of their respective designations in the same geographic market for a substantial period 5 of time, the absence of any evidence of actual confusion may in some cases justify an 6 inference that the actor’s use does not create a likelihood of confusion.”). 7 In analyzing this factor, the Court is guided by the principle that “trademark 8 infringement protects only against mistaken purchasing decisions and not against 9 confusion generally.” Bosley Med. Inst., 403 F.3d at 677 (citation modified). And therefore, 10 the confusion analysis must center on “confusion in the marketplace, as opposed to 11 generalized public confusion.” Accuride Int’l, Inc. v. Accuride Corp., 871 F.2d 1531, 1535 12 n.5 (9th Cir. 1989). As this Court previously noted, non-consumer confusion may be 13 relevant, provided there is evidence of confusion as to: “(1) potential consumers; 14 (2) non-consumers whose confusion could create an inference that consumers are likely to 15 be confused; and (3) non-consumers whose confusion could influence consumers.” 16 Rearden, 683 F.3d at 1214. In these three instances, however, the non-consumer confusion 17 must have a direct relationship to consumer confusion. Id. 18 Plaintiff points to two purported instances of actual confusion as evidence in support 19 of this factor.12 The Court discusses each in turn. 20 a. July 6, 2021 Email from Gerald Anderson 21 On July 6, 2021, Gerald Anderson, an independent claims adjuster Plaintiff 22 previously hired, emailed Plaintiff’s vendor relations director after receiving a phone call 23 from one of Defendant’s then-employees. (Doc. 48-2 at 35; see also id. at 105, -3 at 85.) 24 The email said, “Got a call today from The Best Claim Solution, out of Phoenix AZ. Are 25 you familiar with them at all?” (Doc. 48-2 at 35.) Mr. Anderson titled the email, “Do you 26 12 The record also contains evidence of an email erroneously sent to Plaintiff by an 27 employee of Defendant. (Doc. 53-2 at 43.) Defendant argues this was “due to a mix-up in names” as opposed to a mix-up in companies. (Doc. 53 at 12.) Because Plaintiff does not 28 dispute Defendant’s characterization, or otherwise rely on this incident as evidence of actual confusion, the Court will not consider it in assessing this factor. 1 know of this claims company???” (Id.) 2 Plaintiff construes this email as meaning Mr. Anderson “was so confused he 3 contacted Plaintiff thinking there was an association between the two companies.” (Doc. 4 48 at 13.) But a rational trier of fact could find that this evidence, on its own, is not evidence 5 of confusion—let alone consumer confusion. For instance, the plain language of the email 6 implies that Mr. Anderson understood the two companies to be separate, as evidenced by 7 him asking, “Are you familiar with them?” and “Do you know of this claims company???” 8 (Doc. 48-2 at 35 (emphasis added).) Additionally, Mr. Anderson is a non-consumer. And 9 Plaintiff has presented no evidence or argument as to how evidence of any confusion on 10 the part of Mr. Anderson bears a relationship to consumer confusion. Without more, this 11 evidence does not constitute evidence of actual consumer confusion. See Dynamic Aviation 12 Grp. Inc. v. Dynamic Int’l Airways, LLC, No. 5:15-CV-00058, 2016 WL 1247220, at *26 13 (W.D. Va. Mar. 24, 2016) (an email from a non-consumer reporter seeking clarification 14 about the past relationship between two companies was not actual evidence of confusion). 15 b. November 2024 Tradeshow Conference 16 In November 2024, Plaintiff’s director of marketing, Dale Mason, and Defendant’s 17 senior vice president of sales, Todd Yanak, both attended a tradeshow convention in Las 18 Vegas, Nevada. (Doc. 48-2 at 59-60, -3 at 91-92.) There, a representative of the host 19 company allegedly referred to Mr. Mason and Mr. Yanak as “the two ClaimSolution guys.” 20 (Doc. 48-3 at 91-92.) According to Mr. Mason, Mr. Yanak replied, “[D]on’t even go there. 21 I’m with TheBest Claims Solutions.” (Id.) Mr. Mason understood the statement to mean 22 that the representative recognized the similarities between the two companies. (Id.) During 23 Mr. Yanak’s deposition, counsel for Plaintiff asked whether he recalled the representative’s 24 statement “Oh, look at the claim solution guys getting along,” to which Mr. Yanak replied, 25 “I don’t remember that, no.” (Doc. 48-2 at 61.) Mr. Yanak also represents that he has “never 26 confused the two companies,” that he has “never met anyone who was confused between 27 the two companies,” and that at previous conferences, Plaintiff’s employees never “made 28 any comments regarding name confusion.” (Doc. 53-2 at 41.) 1 Again, this evidence alone does not appear to be evidence of actual confusion. 2 Hearsay considerations aside,13 the representative’s spontaneous reference to both 3 employees as the “claims solutions guys”—where both companies’ names include the 4 terms “claim” “solutions”—is too far attenuated to constitute evidence that the 5 representative herself was confused. Indeed, as Defendant aptly notes, this statement can 6 equally be interpreted as inferring the representative was surprised the employees were 7 socializing while involved in active litigation. 8 Plaintiff’s evidence of actual confusion is de minimis at best and “[d]e minimis 9 evidence of actual confusion does not establish the existence of a genuine issue of material 10 fact regarding likelihood of confusion.” Mattel, Inc. v. MCA Recs. Inc., 28 F. Supp. 2d 11 1120, 1149 (C.D. Cal. 1998) (quoting Universal Money Ctrs., Inc. v. AT&T, 22 F.3d 1527, 12 1535 (10th Cir.), cert. denied, 513 U.S. 1052 (1994)), aff’d, 296 F.3d 894 (9th Cir. 2002); 13 see also Lerner & Rowe PC v. Brown Engstrand & Shely LLC, 119 F.4th 711, 722 (9th 14 Cir. 2024) (weighing de minimis evidence of actual confusion against plaintiff because the 15 evidence painted a picture that contradicted the plaintiff’s arguments for confusion), cert. 16 denied sub nom., Lerner & Rowe PC v. Brown Engstrand & Shely LLC, No. 24-953, 2025 17 WL 1496488 (U.S. May 27, 2025); Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625 18 (9th Cir. 2005) (holding that there was no dispute of material fact regarding likelihood of 19 confusion, in part because the “scant evidence” of confusion consisted of “[a] single retailer 20 and a single customer” mistaking the brands). 21 While this factor bears little weight in the overall analysis, the Court finds that it 22 weighs against a likelihood of confusion. 23 v. Marketing Channels Used 24 The Court turns to the next Sleekcraft factor—the marketing channels used. 25 “Convergent marketing channels increase the likelihood of confusion.” Sleekcraft, 599 26 F.2d at 353. In assessing this factor, the critical question is whether “the general class 27 of . . . purchasers exposed to the products overlap.” Id.; see also Pom Wonderful, 775 F.3d 28 13 See supra III.A.2. 1 at 1130 (“In assessing marketing channel convergence, courts consider whether the parties’ 2 customer bases overlap and how the parties advertise and market their products.”). 3 As evidence supporting a likelihood of confusion, Plaintiff points to testimony from 4 Defendant’s employee Todd Yanak, who explained that they have promoted services to 5 overlapping clients. (Doc. 48-2 at 63-64.) Defendant acknowledges, “the marketing 6 channels used by Plaintiff and Defendant are substantially similar.” (Doc. 54 at 12.) 7 Therefore, this factor favors Plaintiff. 8 vi. Degree of Consumer Care 9 The next Sleekcraft factor assesses the degree of care likely to be exercised by 10 consumers of the junior user’s goods. 599 F.2d at 353. “The reference point for this 11 factor ‘is the typical buyer exercising ordinary caution.’” Fortune Dynamic, 618 F.3d at 12 1038 (quoting Sleekcraft, 599 F.2d at 353). When consumers exercise a high degree of 13 care, they are less likely to be confused. See Brookfield Commc’ns, 174 F.3d at 1060 14 (“We expect [a consumer] to be more discerning—and less easily confused—when he is 15 purchasing expensive items and when the products being sold are marketed primarily to 16 expert buyers.” (citation omitted)). Conversely, when consumers exercise a low degree of 17 care, they are more likely to be confused. Id. 18 Plaintiff argues independent claims adjustors are less sophisticated and exercise a 19 low degree of care, which tilts this factor in favor of confusion.14 (Doc. 48 at 15; Doc. 58 20 at 10.) But as this Court has already determined, independent claims adjustors are not part 21 of the relevant consumer base. See supra III.B.1. And even if this Court considered the 22 independent adjustors’ degree of care, “confusion on the part of a non-sophisticated 23 non-consumer may shed little or no light on whether a sophisticated consumer would 24 likewise be confused.” Rearden, 683 F.3d at 1214-16. Therefore, the Court concludes that 25 the relative degree of care exercised by independent claims adjusters is largely irrelevant 26 14 Plaintiff states, “Defendant admitted the independent claims adjusters exercise a low degree of care” and “do not exercise much care when they decide companies to take work 27 from.” (Doc. 48 at 15.) But Plaintiff cites to no record evidence in support of this assertion, and in adjudicating a motion for summary judgment, conclusory statements by counsel 28 without evidentiary support are insufficient to raise a genuine dispute of material fact. See Taylor v. List, 880 F.2d 1040, 1045 (9th Cir. 1989). 1 to the overall confusion analysis. 2 As to the relevant consumer market, Plaintiff concedes this Sleekcraft factor “is 3 arguably neutral in the context of insurance companies.” (Doc. 48 at 15; Doc. 57 at 17.) 4 Conversely, Defendant argues that its consumers—principally, insurance company 5 executives—are highly sophisticated consumers who purchase expensive services and 6 exercise a high degree of care, thereby tilting this factor against a likelihood of confusion. 7 (Doc. 54 at 12-13; Doc. 53 at 14.) 8 The evidence in the record consists of testimony from Bradley Dunlap, Defendant’s 9 CEO, who explained that securing a new client is a “very difficult” and “very long process 10 within the insurance industry,” requiring “[v]ery hard work, multiple phone 11 calls . . . appointments[,] . . . meeting with people,” and compiling various pilots and 12 reports. (Doc. 54-1 at 39-40.) Defendant’s employee, Todd Yanak, similarly testified that 13 “[t]here’s an extensive level of vetting within the insurance industry,” requiring various 14 meetings and requests for proposals over the course of months. (Id. at 42-43.) Mr. Yanak 15 also recognized, however, that the actual vetting process varies greatly across insurance 16 companies. (See Doc. 48-2 at 65 (explaining that “[e]very customer has their own form of 17 vetting” across varying degrees of sophistication).) 18 In light of this conflicting testimony and because Plaintiff concedes this Sleekcraft 19 factor is neutral, the Court weighs it neither in favor nor against a finding of confusion. 20 vii. Defendant’s Intent 21 The seventh Sleekcraft factor assesses the defendant’s intent in selecting the mark. 22 Sleekcraft, 599 F.2d at 349. “When the alleged infringer knowingly adopts a mark similar 23 to another’s, reviewing courts presume that the defendant can accomplish his purpose: that 24 is, that the public will be deceived.” Entrepreneur Media, 279 F.3d at 1148 (citation 25 modified). This factor is of “minimal importance” in assessing a likelihood of consumer 26 confusion, GoTo.com, 202 F.3d at 1208, since “an intent to confuse consumers is not 27 required for a finding of trademark infringement.” Brookfield Commc’ns, 174 F.3d at 28 1059. 1 In favor of confusion, Plaintiff argues Defendant admitted it rebranded with the 2 name “TheBest Claims Solutions” knowing Plaintiff owned the “ClaimSolution” word 3 mark. (Doc. 48 at 15.)15 This is because Defendant performed a trademark viability search 4 in 2019 and the results included Plaintiff’s registered mark. (Id.; see also Doc. 48-3 at 27, 5 66-67.) Defendant argues it was not actually aware of Plaintiff’s company until receiving 6 the August 6, 2021 cease-and-desist letter. (Doc. 53 at 15.) And mere knowledge of another 7 mark’s existence is insufficient to show an intent to deceive consumers. (Id.) 8 Defendant is mistaken. In the Ninth Circuit, “[t]his factor favors the plaintiff where 9 the alleged infringer adopted his mark with knowledge, actual or constructive, that it was 10 another’s trademark.” Brookfield Commc’ns, 174 F.3d at 1059. At minimum, Defendant 11 can be fairly charged with constructive knowledge of Plaintiff’s mark—even if it lacked 12 actual knowledge of the mark—given the trademark viability search conducted in 2019. 13 And yet, because this factor is relatively unimportant to the overall analysis, the Court 14 concludes that it tilts only slightly in favor of Plaintiff. 15 viii. Likelihood of Expansion 16 That brings the Court to the final Sleekcraft factor: the “likelihood of expansion of 17 the product lines.” Sleekcraft, 599 F.2d at 349. This factor “is relatively unimportant where 18 two companies already compete to a significant extent.” Brookfield Commc’ns, 174 F.3d 19 at 1060; see GoTo.com, 202 F.3d at 1209 (“Because Disney and GoTo compete with one 20 another by providing similar Internet search engines, we decline to evaluate the issue of 21 whether there is a likelihood of expansion of their product lines.”). 22 Because both parties concede they are direct competitors, this factor does not weigh 23 in favor nor against a finding of confusion. See Yuga Labs, Inc. v. Ripps, 144 F.4th 1137, 24 1174 (9th Cir. 2025) (holding that “this factor does not move the needle one way or 25 another” where the parties directly compete). 26 27 15 Plaintiff cites to pages 51 through 59 of Amy Ward’s deposition as evidence Defendant 28 adopted its mark with knowledge of Plaintiff’s mark. (Doc. 48 at 15 (citing Ex. 9 at 51:20-59:8).) But pages 51 through 55 are not included in the attached excerpt. 1 ix. Factors as a Whole 2 And finally, the Court “must consider the Sleekcraft factors as a whole to determine 3 whether a likelihood of confusion results from [Defendant’s] use of the marks.” 4 Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1078 (9th Cir. 2006). 5 As previously noted, summary judgment will be granted in favor of the defendant unless 6 the plaintiff demonstrates “sufficient evidence to permit a rational trier of fact to find that 7 confusion is ‘probable,’ not merely ‘possible.’” M2 Software, 421 F.3d at 1085 (citation 8 omitted). At the same time, summary judgment is generally disfavored in trademark 9 disputes given the intensely factual nature of the confusion inquiry. See Interstellar 10 Starship Servs., Ltd. v. Epix Inc., 184 F.3d 1107, 1109 (9th Cir. 1999). 11 This case presents a close call. Four Sleekcraft factors favor Plaintiff. There is a 12 genuine dispute of material fact as to the mark’s conceptual strength, but at best, the mark 13 is suggestive and therefore presumed conceptually weak. And the other factors either weigh 14 against confusion, or add little to the overall analysis. The Court must construe the evidence 15 in a light most favorable to each non-moving party, and in doing so, the Court concludes 16 that summary judgment is not appropriate for either Plaintiff or Defendant. A jury will 17 ultimately need to weigh the evidence and make the conclusive determination as to the 18 likelihood of consumer confusion.16 19 Accordingly, the Court will deny Plaintiff’s motion as to liability in Count I and 20 deny Defendant’s motion as to Count I. 21 3. Fair Use Defense 22 Defendant argues it is entitled to summary judgment because its use is protected by 23 the classic fair use doctrine. (Doc. 53 at 16-17.) In response, Plaintiff contends Defendant 24 cannot rely on the fair use defense for two reasons: first, because Defendant uses “claim 25 solutions” as a trademark, and second, because Defendant cannot establish it used the mark 26 in good faith. (Doc. 57 at 18-20.) 27 Section 1115(b) of the Lanham Act codifies the common law classic fair use 28 16 Because the Court will deny both parties’ motions for summary judgment, it need not consider Defendant’s request for attorneys’ fees. (Doc. 53 at 19-20.) 1 defense, which recognizes that “[a] junior user is always entitled to use a descriptive term 2 in good faith in its primary, descriptive sense other than as a trademark.” 1 J. Thomas 3 McCarthy, McCarthy on Trademarks and Unfair Competition § 11:45 (5th ed. 2025). To 4 claim this defense, three elements must be satisfied: “(1) Defendant’s use of the term is not 5 as a trademark or service mark; (2) Defendant uses the term fairly and in good faith; and 6 (3) Defendant uses the term only to describe its goods or services.” Cairns v. Franklin Mint 7 Co., 292 F.3d 1139, 1151 (9th Cir. 2002) (citation modified). In the Ninth Circuit, however, 8 “the classic fair use defense is not available if there is a likelihood of customer confusion 9 as to the origin of the product.” Id. And therefore, the defense is relevant only insofar as it 10 “complements the likelihood of customer confusion analysis set forth in Sleekcraft.” Id. 11 Because triable issues of fact remain as to the likelihood of consumer confusion, it 12 is more appropriate for Defendant to raise the fair use defense at trial. Marketquest Grp., 13 Inc. v. BIC Corp., 316 F. Supp. 3d 1234, 1269-70 (S.D. Cal. 2018) (holding “Defendants 14 are not precluded from raising the fair use defense” where disputed material facts exist as 15 to the likelihood of confusion).17 The Court will deny Defendant’s motion for summary 16 judgment on the fair use defense. 17 C. Count II: Unfair Competition 18 The parties also cross-move on Plaintiff’s claim for common law trademark 19 infringement and unfair competition—each of which require a likelihood of consumer 20 confusion. See Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1403 21 (9th Cir. 1997) (explaining that likelihood of confusion is the “basic test” for common law 22 trademark infringement); Taylor v. Quebedeaux, 126 Ariz. 515, 516 (1980) (“[T]he 23 essence of unfair competition is confusion of the public.”). Because there is a genuine 24 dispute of material fact as to the likelihood of confusion, the Court will deny summary 25 17 Unlike a classic fair use defense, where a defendant uses the plaintiff’s mark only to describe its own goods, the nominative fair use analysis applies where a defendant uses the 26 plaintiff’s mark to describe the plaintiff’s product. Cairns, 292 F.3d at 1151. This is significant because “[a] court may find classic fair use despite ‘proof of infringement,’ “ 27 whereas “nominative fair use . . . represents a finding of no liability” for trademark infringement. Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1183 n.11 (9th 28 Cir. 2010). In this case, Defendant does not employ “claims solutions” in reference to Plaintiff’s mark, or otherwise argue the nominative fair use defense applies. 1 || judgment to either party on Count II. 2 The Court also declines to address Defendant’s argument that Count II should be 3 || dismissed because “Plaintiff likely lacks sufficient standing to substantiate its allegation of common law trademark infringement in Arizona.” (Doc. 53 at 18.) Defendant offers no || legal authority in support of its argument or otherwise explain its position in any 6 || meaningful detail. IV. CONCLUSION 8 Accordingly, 9 IT IS ORDERED that Plaintiff's Motion for Partial Summary Judgment (Doc. 48) is denied. 11 IT IS FURTHER ORDERED that Defendant’s Motion for Summary Judgment || (Doc. 53) is denied. 13 Dated this 21st day of August, 2025. 14 Wichael T. Sihurde Michael T. Liburdi 17 United States District Judge 18 19 20 21 22 23 24 25 26 27 28 - 26 -